This
matter is before the Court on plaintiff/counterclaim
defendant Slingmax, Inc.’s (“Slingmax”)
motion to dismiss the amended counterclaims of
defendant/counterclaim plaintiffs Marcal Rope & Rigging,
Inc. and Marcal Lifting Products Co. (collectively
“Marcal”), pursuant to Rule 12(b)(6), Federal
Rules of Civil Procedure, for failure to state a claim upon
which relief can be granted. Marcal opposes the motion and it
is fully briefed. For the following reasons, the Court will
grant the motion to dismiss.

I.
Background

This is
an action for federal trademark infringement under 15 U.S.C.
§ 1114, trademark counterfeiting under 15 U.S.C. §
1114(1)(a), and false designation of origin and unfair
competition under 15 U.S.C. § 1125.
Plaintiff/counterclaim defendant Slingmax alleges that it is
“a leader in the rigging and overhead lifting industry,
particularly with respect to synthetic slings for heavy
lifting and rigging.” Complaint, ¶ 8. Slingmax
alleges that it has used the name and mark COVERMAX® for
its abrasion-resistant covers for synthetic slings since
December 1997, and was issued U.S. Trademark Registration No.
3, 183, 055 for the mark on December 12, 2006. Id.,
¶¶ 12, 16. Slingmax alleges that in January 2006,
Marcal became a licensee of its intellectual property,
including the non-exclusive right to use Slingmax’s
“CoverMax™ Sleeves” mark, among other
Slingmax marks, but as early as the second quarter of 2006,
this license was revoked. Id., ¶¶ 13-14.

Slingmax
alleges that defendants/counterclaim plaintiffs Marcal also
sell a range of rigging and construction products, including
synthetic slings for lifting heavy loads, and sells slings
with abrasion-resistant covers for synthetic slings that bear
the spurious name “COVERMAX.” Id.,
¶¶ 19-20. Slingmax alleges that Marcal’s
slings do not incorporate a genuine cover fabricated by
Slingmax, Marcal is not authorized to use the COVERMAX®
mark, and Marcal’s slings are inferior to those of
Slingmax but Marcal is holding them out to the relevant
public as identical or closely comparable to
Slingmax’s. Id., ¶¶ 21-22. Slingmax
alleges that Marcal’s use of the COVERMAX® name is
likely to cause customer confusion and infringes on its
federally protected rights in the mark.

Defendants/counterclaim
plaintiffs Marcal answered the complaint and filed three
counterclaims. In Count I, Marcal seeks declaratory judgment
that the COVERMAX® mark is unenforceable and/or that
Marcal’s alleged use of the mark is non-infringing
because the mark is or has become generic. In Count II,
Marcal seeks declaratory judgment that Slingmax has abandoned
trademark use of the COVERMAX® mark. In Count III, Marcel
seeks cancellation of the COVERMAX® mark because it is or
has become generic and because it has been abandoned.

Slingmax
moves for dismissal of Marcal’s counterclaims for
failure to state a claim on which relief can be granted.

II.
Legal Standard

The
purpose of a motion to dismiss for failure to state a claim
is to test the legal sufficiency of the complaint. To survive
a motion to dismiss pursuant to Rule 12(b)(6) for failure to
state a claim upon which relief can be granted, “a
complaint must contain sufficient factual matter, accepted as
true, to ‘state a claim to relief that is plausible on
its face.’” Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009) (quoting Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 570 (2007)). A claim for relief
“must include sufficient factual information to provide
the ‘grounds’ on which the claim rests, and to
raise a right to relief above a speculative level.”
Schaaf v. Residential Funding Corp., 517 F.3d 544,
549 (8th Cir. 2008) (citing Twombly, 550 U.S. at 555
& n.3). This obligation requires a plaintiff to plead
“more than labels and conclusions, and a formulaic
recitation of the elements of a cause of action will not
do.” Twombly, 550 U.S. at 555.

On a
motion to dismiss, the Court accepts as true all of the
factual allegations contained in the complaint, even if it
appears that “actual proof of those facts is
improbable, ” id. at 556, and reviews the
complaint to determine whether its allegations show that the
pleader is entitled to relief. Id. at 555-56;
Fed.R.Civ.P. 8(a)(2). The principle that a court must accept
as true all of the allegations contained in a complaint does
not apply to legal conclusions, however. Iqbal, 556
U.S. at 678 (“Threadbare recitals of the elements of a
cause of action, supported by mere conclusory statements, do
not suffice”).

&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;Count I
of Marcal&rsquo;s counterclaim seeks in part a
&ldquo;judicial declaration that Defendants&rsquo; alleged
use of COVERMAX is a fair use.&rdquo; (Doc. 21, &para; 12.)
Slingmax asserts that Count I fails to state a claim and
should be dismissed to the extent it seeks a declaration of
fair use, as fair use is an affirmative defense to trademark
infringement and not its own cause of action, citing KP
Permanent Make Up, Inc. v. Lasting Impression I, Inc.,
543 U.S. 111, 118 (2004). Slingmax states that fair use is
defined as party&rsquo;s use of a trademark as a &ldquo;term
or device which is descriptive of and used fairly and in good
faith only to describe the goods or services of such party[,
]&rdquo; 15 U.S.C. &sect; 1115(b)(4), and might permit others
to use a protected mark to describe aspects of their own
goods, Car-Freshner Corp. v. S.C. Johnson & Son,
Inc., 70 F.3d 267, 270 (2d Cir. 1995), or to comment
upon ...

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